WIPO to ICANN: On URS “Summits”, It’s Our Way or the Highway

Overview: Timely implementation of the URS, a required RPM for new gTLDs, is critical to the success of the program as well as to the adequacy of registrant rights – for now just at new gTLDs, but with its possible extension to incumbent gTLDs sure to be a subject of future debate.

After noting that ICANN’s draft FY 13 budget called for budgeting $175,000 toward two undefined URS “Summits” for the purpose of “reconfiguration” of the present URS model, ICA filed a document disclosure request seeking background information on this earmark, and particularly to find the data and analysis justifying the conclusion that the current URS policy – adopted unanimously by ICANN’s Board after two years of multi-stakeholder debate – cannot meet the desired price target and therefore must be reopened.

ICANN responded to our request within their thirty day response period with just minutes to spare. Unfortunately, what they disclosed arrived just after the end of the Prague meeting, so it could not inform the URS implementation discussions there.

Our key take-aways from the disclosed documents are:

· Most of the information we requested does not exist because virtually no planning has occurred for the “Summits”, which is just a placeholder term.

· ICANN envisioned the “community discussion” facilitated by the Summit process as taking place in Geneva, Switzerland under the auspices of WIPO, which is headquartered there. Geneva is one of the most expensive cities in the world; most of the budget request would go toward staff travel and the hiring of a “professional facilitator” to develop a revamped URS Model.

· The relevant Business Case Data Sheet does not include any role for the GNSO Council between development of a revamped URS Model and the solicitation of providers through an RFP, notwithstanding the clear potential for adoption of major URS policy changes.

· It is not clear whether participation in the Summits is envisaged as open to all or limited to select invitees – in any event, the Geneva location and associated costs would tend to skew participation toward well-funded brand/trademark interests.

· WIPO advised ICANN in mid-April that the Summits proposal “does not inspire confidence on WIPO’s part in our hosting a URS session at this stage.” It went on to say that it wanted “fundamental changes” based on its long-standing positions on elements of a rapid suspension process, adding, “We would consider an express prior commitment to such a shift, including the requisite Board support, as a pre-condition to a fruitful meeting on the URS.” In other words, WIPO wants the URS model results of the multi-stakeholder process replaced by its mono-stakeholder dictate, and won’t agree to host any “Summits” unless their outcome is largely pre-ordained.

· The major URS change desired by WIPO is “a shift to the proposed respondent-default basis without panel”. This translates to a system in which a registrant failing to file a response within the URS’ tight time frame would automatically have his domain suspended, without any expert human reviewing the complaint to see if it stated a clear and convincing case of trademark infringement – a system reminiscent of the now-deceased SOPA legislation in which domains were to be blocked and crippled on mere allegations of IP infringement absent any judicial review, with the burden on the registrant to undo the damage after his website was shuttered.

Based on what was revealed in the disclosed documents, little to no URS implementation has occurred over the past year notwithstanding its critical role in the new gTLD program. There was also not a single disclosed memo analyzing the cost of implementing various aspects of the URS policy now contained within the Applicant Guidebook.

We believe that the Summits concept will lead to unnecessary controversy and delay the launch of new gTLDs, and instead urge ICANN to provide staff support to an open and transparent multi-stakeholder URS implementation effort.

Those interested in more details and analysis can read on…

On May 29th we submitted a DIDP request to ICANN to try to get some basic information regarding what exactly was going on with implementation of Uniform Rapid Suspension (URS)(see http://internetcommerce.org/URS_DIDP for our request letter and background, and http://www.icann.org/en/about/transparency for ICANN’s response). In particular, we wanted to know what implementation had occurred to date, and in conjunction with whom, because there has been no initiation of an open implementation process such as that already executed for the Trademark Clearinghouse (TMC) – even though ICANN staff stated at both the Dakar and San Jose meetings that one would be commencing shortly. We also wanted to review any cost data analysis that justified the conclusion that the URS policy hammered out through long and arduous multi-stakeholder negotiations couldn’t be executed by arbitration providers at anything near the target filing fee, and that the URS therefore required “reconfiguration” through two “Summits”.

URS is very important for several reasons:

1. It, along with the TCM, is a required Rights Protection Mechanism (RPM) for new gTLDs. As a result, if URS policy is not locked down and arbitration providers put in place by the time that new gTLDs are ready for delegation to the root, their launch and the entire program will be unnecessarily delayed.

2. URS policy will affect the economic prospects of new gTLDs. If it is altered to unreasonably diminish registrants’ due process rights then the registration of domains at new gTLDs may be inordinately depressed, and the optimum competition and innovation potential of new gTLDs will go unrealized.

3. At the future point in time that ICANN finally undertakes UDRP reform (mid-2014 initiation at the earliest under the relevant GNSO Council resolution) there will undoubtedly be calls from trademark interests to impose URS on .com and other incumbent gTLDs. So it is important to all existing domain registrants that the URS truly be a narrow supplement to the UDRP used solely for inc
ontrovertible instances of cybersquatting and providing adequate due process rights – and not a cut-rate substitute for the UDRP that abets reverse hijacking of the most valuable domains.

Our letter made clear that we hoped the requested materials could be made available by the start of the Prague meeting “so that we and others may be provided with the maximum amount of factual background to inform our remarks, activities, and interactions in Prague”. While ICANN did adhere to its target response time of 30 days, it did so with only minutes to spare – the response and accompanying documents were e-mailed shortly before midnight Prague time on Thursday, June 28th. Unfortunately, that was hours after the conclusion of the Public Forum at which we delivered remarks to the Board regarding URS implementation, and the day after a 90 minute session dealing exclusively with the URS. Had the DIDP response been delivered but forty-eight hours earlier we would have shared the materials with the entire community to better inform the discussion. But we are sharing them now in the hope that they shape the path of URS implementation in a positive direction.

So what exactly did ICANN provide us with?

The Cover Memo

This document affirms that the “Summit” concept is still completely amorphous and that ICANN still has no concrete blueprint for facilitating URS implementation:

Much of the information sought within the request is not in existence. As Kurt Pritz, the key staff person responsible, publicly discussed during multiple sessions at the ICANN meeting in Prague (June 2012), the inclusion of a budget item in the FY13 did not arise as a result of extensive scoping or planning work. Rather, the budget item was included in the budget as a placeholder, in recognition that community discussion was needed. The budget was placed first; the planning is yet to come, and the URS session in Prague was one of the first steps. (Emphasis added)

As for any data or analysis identifying which elements of the current URS Model caused staff to reach the conclusion that the price target is unattainable, nothing new is provided:

The documentation of provider inability to meet the cost target of US$300–‐500 is already publicly available. For example, NAF submitted a public letter in June 2011 regarding the insufficiency of the cost model.

We don’t really find this part of the response satisfactory because, again, there is no systematic analysis of the cost factors attributable to discrete URS elements, and that should be the starting point for any discussion about reconfiguring the model, much less decisions about what if anything needs to be revised. As for the National Arbitration Forum (NAF) letter, we have searched the ICANN website using multiple terms but have yet to locate it – regardless, that letter was sent in June 2011, the month in which the Board met in Singapore, adopted the Applicant Guidebook, and gave the new gTLD program a green light to proceed to the application stage, so it’s hardly new information and does not explain why no real implementation has been initiated over the past year. It’s also well known that NAF is providing a rapid suspension option as a UDRP alternative for the .XXX TLD, and that they charge the same for a filing ($1300) as for a single panelist UDRP case. If anything, NAF’s input and conduct indicates that the target of a $300-500 URS fee may be quite unrealistic and should be abandoned rather than used as an excuse to reopen a settled policy matter that generated significant controversy and heated debate.

The memo then goes on to state that no decision has yet been made to alter the URS, that the Summit process envisions a “community discussion”, and that no detailed Summit planning has yet occurred :

There have been no decisions made to change from what is set forth in the Applicant Guidebook. A discussion of prioritization of the characteristics of the URS is part of the anticipated community discussion that is imagined through the summit proposal.

Because the Summit planning efforts anticipated within your Request have not taken place, the broad range of documentation you request does not exist within ICANN. (Emphasis added)

Finally, after informing us that most of what we requested does not exist, the memo then informs us that some of what little relevant material does exist is being denied under the “Defined Condition of Non-Disclosure set forth in the DIDP”. That’s a bit frustrating.

The Disclosed Supporting Documents

While our 6-page document request letter elicited only 4 pages of disclosed documents, they are nonetheless of some considerable value and interest.

The first is a “FY13 Business Case Data Sheet” that again asserts, without backup data or analysis, that “there is a significant gap between the features specified for the URS procedure and the desired cost”. The most revealing aspect of this document is the Scope section:

The scope of the project is to develop a URS Model (including administrative procedures and rules) and to select URS dispute resolution providers.

The following work will be required to accomplish this:

1. Determine the makeup of a group to meet in a summit of UDRP provider representatives and community members;

2. Conduct 2 summit sessions in Geneva (one in FY12 and one in FY13) to consider the challenges for implementation and propose a model for community consideration;

3. Based on the outcome of those consultations draft a proposed set of procedures and rules to govern the URS process;

1. Despite the cover memo’s reference to “community participation” the Summits as envisioned will not necessarily be open to all individuals and organizations that wish to participate – the makeup of the “group” is yet to be determined, and would consist of some community members and of representatives of existing UDRP providers (but not of potential new URS providers).

2. The two Summits were envisioned as being held in Geneva, Switzerland; most likely due to the fact that the World Intellectual Property Organization (WIPO) is headquartered there and was envisioned as the host. Geneva is one of the ten most expensive cities in the world based on anyone’s analysis (see http://en.wikipedia.org/wiki/List_of_most_expensive_cities_for_expatriate_employees#ECA_International); while corporate brand interests would not likely find that a significant barrier to participation, having to travel to and book accommodations in Geneva — not once but twice — would likely be an insurmountable obstacle for many parties, including academics and NGOs, that played an integral role in shaping the present URS model.

3. If the two Summits reached consensus on a new model it would then be put out for community comment. While that after-the-fact review is commendable it is not the same as open community participation in recasting the URS. And, from the viewpoint of new gTLD applicants burning cash and anxious for delegation, it adds another time-consuming step to the process.

4. Following that community review the arduous task of drafting proposed procedures and rules – true implementation! — would finally commence. That would chew up considerably more time, especially as “the devil is in the details” when it comes to translating broad policies into precise implementation language.

5. Once the procedures and rules were finalized a RFP would be conducted for URS providers. More time would be consumed to draft the RFP, review the responses, and appoint providers.

6. In addition to the above, two critical steps are conspicuously missing from the Scope section–

The first is review of any proposed changes in URS policy by both the GNSO Council and the Board. The GNSO has already expressed concern that its gTLD policy primacy could be undermined by the contemplated Summit process – and ICA firmly believe that any policy alterations of URS or other aspects of the new gTLD program should be made in “regular order” with the GNSO playing its standard policy review and approval role, followed by Board scrutiny and approval.

The second is the drafting and adoption of a standard contract between ICANN and selected URS providers. The STI-RT group that shaped the adopted consensus URS model was quite adamant that, unlike the current practice for UDRP providers, there should be a binding contract between ICANN and all URS providers. ICA seconds that position wholeheartedly, as we believe that a contract establishing the bounds of provider powers and giving ICANN a flexible range of enforcement mechanisms is an integral aspect of assuring registrant rights under this new RPM.

This Data Sheet also discloses that the majority of the $170,000 funding placeholder requested for the Summits is earmarked for ICANN staff travel ($70,000 – Geneva’s costliness being no impediment when one has $350 million in applicant fees to draw upon) and for retention of a “professional facilitator and writing specialist” ($40,000). It’s not clear why ICANN believes that a professional facilitator, a departure from standard ICANN practice, would be required to guide Summit discussions.

The final major observation we have regarding the Data Sheet is that the multiple steps envisioned for the contemplated process will be quite time-consuming, and cause us to doubt that ICANN could meet its stated goal of having the URS model recast and providers in place by June 2013 if this path is followed. In fact, if the proposed revision of the URS becomes a multi-step magnet for controversy, it could easily delay initial delegations of new gTLDs into 2014 or beyond.

The second page of disclosed documents is the one that inspired the headline of this essay, and consists of a short April 12, 2012 e-mail from Erik Wilbers of WIPO to Kurt Pritz of ICANN. We quote and comment upon it with some slight trepidation as we recall that during an ICANN meeting session early on in URS development we orally quoted from a letter that WIPO had sent to ICANN that we believed indicated that the model being contemplated would most likely be a significant substitute for UDRP filings rather than the intended narrow supplement. At the end of the session a WIPO staff person approached us and angrily proclaimed. “You are not allowed to quote from our letter!” We replied that we would make fair use of public documents whenever we wished and that we believed that open and informed debate, not censorship, was the proper basis for policy decisions.

Here are the relevant portions of the Wilbers e-mail:

As promised, we now come back to the subject of your brief recent call.

Frankly, the development of this file does not inspire confidence on WIPO’s part in our hosting a URS session at this stage.

Starting with the blueprint offered three years ago (under the term ‘ESM’) through the observations submitted in response to various URS drafts (such as the detailed operational listing in WIPO’s letter of December 2, 2010), WIPO’s experience-based suggestions for a fair and workable URS structure have been well known throughout the deliberations that have begotten the URS as adopted by the Board.

Thus, it would seem unlikely that these stakeholders would now feel able to commit to the rather fundamental changes we believe to be in everyone’s interest – notably a shift to the proposed respondent-default basis without panel, subject to appropriate safeguards. We would consider an express prior commitment to such a shift, including the requisite Board support, as a pre-condition to a fruitful meeting on the URS.(Emphasis added)

From this correspondence we can conclude that WIPO was asked to host the URS “Summits” in Geneva. We believe that having WIPO play such a role would be a mistake, as in our view they have not acted as a neutral party seeking to achieve a reasonable balance between registrant and rights holder interests in the URS debate, but as a vigorous advocate for the primacy of trademark over registrant rights. Further, as the e-mail demonstrates, they have never accepted the legitimacy of the URS model arrived at through ICANN’s multi-stakeholder consensus process but remain committed to discarding it in favor of a model closely adhering to their proposed (and rejected) ESM.

Second, WIPO would only consent to hosting URS Summits if their result was largely pre-ordained – in which event, we ask, why bother holding the Summits at all? As a pre-condition to playing host, WIPO wants an express prior commitment, guaranteed by “requisite [ICANN] Board support” that “rather fundamental changes” will result — the principal one being “a shift to the proposed respondent-default basis without panel, subject to appropriate safeguards”. This imperious demand should be dismissed out of hand by members of ICANN’s Board should it ever reach them.

Of course, the present URS model is a compromise in which the narrow time window in which the regist
rant must respond is counterbalanced by the assurance that even when the registrant misses that deadline the complaint will still be reviewed by a trademark law expert to determine whether it presents a prima facie case of infringement through clear and convincing evidence. What WIPO wants – “respondent-default basis without panel” — is a process in which all default cases would be decided in favor of the complainant absent any examiner review. This bears a striking resemblance to the recently deceased SOPA legislation, in which domains would first be blocked or denied payment and ad services absent any judicial review, with the burden on the registrant to prove his innocence after his website is shuttered and he is deprived of income and speech.

In this context, WIPO’s reference to the retention of “appropriate safeguards” is worthless – the assurance of expert examiner review is the appropriate and necessary safeguard for registrants and this is precisely what WIPO seeks to eliminate. We have no objection to a URS being provided at the lowest possible cost to complainants – but not when the cost target takes primacy over retention of the most important and meaningful guarantee of registrant rights.

The remaining two pages of disclosed documents consists of e-mails between ICANN staff discussing the “mess with the GNSO” triggered by the surfacing of the Summits concept in a draft budget, as well as the inquiries it triggered from other parties.

Closing Thoughts

We remain incredulous and disturbed that a year after launching the new gTLD program’s application phase virtually nothing has been done by ICANN to implement the URS. What is clearly required is a process for expedited discussion and resolution of implementation of this required RPM, conducted in a manner that won’t reopen the existing model in fundamental ways and thereby set off a multi-tiered controversy that will inordinately delay the delegation of new strings and the offering of domains to general public registrants.

Given its insistence on “rather fundamental changes” as a pre-condition for even hosting discussions in Geneva, and its goal of a URS model that is at broad variance with the existing consensus model and that would jettison the most fundamental registrant safeguard – the assurance that every complaint will be reviewed by a competent examiner to see if passes ‘the laugh test’ – it seems evident to us that WIPO is part of the problem and not the solution when it comes to URS implementation, and that the road to timely URS implementation does not pass through Geneva.

While we remain skeptical that a URS preserving essential registrant rights can be provided within the $300-500 price target range, we do believe that a URS that is utilized only for incontrovertible cases of cybersquatting – that is, cases in which an examiner can reach a firm conclusion within a very brief time span (and if he cannot, then the complaint properly belongs in a UDRP or litigation) — can be offered for a significantly lower fee than a UDRP.

The 90-minute URS discussion session held in Prague revealed that there are parties on all sides of this question who share a common goal of implementing a URS that is rapid, cost-effective, and rights protective and are willing to engage in goodwill discussions to achieve it. Rather than expending $175,000 on a cumbersome, multi-stage “Summits” process we would urge that ICANN allocate some professional staff to facilitate an Implementation Advisory Group (IAG) that is open to all interested parties and transparent in operation — similar to the one that has achieved so much progress on the TMC — to tackle the issue. If this IAG comes up with recommended alterations to the present model that implicate policy they should of course be considered by the GNSO, followed by the Board, hopefully on an expedited basis.

As for selecting URS providers, ICANN legal staff should be devising a standard contract that will be required for all those entities who wish to provide this service. The RFP should be widely distributed as there are many competent arbitration providers around the world, beyond WIPO and NAF, who are quite capable of assembling trademark experts to administer a narrow rights protection procedure focused solely on clear-cut infringement. In fact, given that WIPO is clearly hostile to the current URS model, and that NAF is on record regarding the high fee it would charge, am aggressive RFP outreach could attract competent new arbitration providers and help assure that the WIPO-NAF duopoly that has dominated UDRP decision-making is not replicated for the URS. That would be another positive pro-competitive outcome for the new gTLD program.

The time for initiating implementation of the multi-stakeholder consensus URS model contained in the Guidebook is long past due. So let’s get on with it through a multi-stakeholder discussion that dispenses with any need for a cumbersome and exclusionary Summits approach guided by an expensive professional facilitator. ICANN community members, acting in an expeditious manner and in a cooperative spirit of goodwill, are fully capable of getting the job done on their own — if they are allowed to do so.